DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-7 and 9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Takenaka (US 2020/0140736).
Takenaka exemplifies a composition comprising the following (Example 3):
(D) polydimethylsiloxane having vinyl groups on both ends, which meets applicants’ (a);
(E-2) polyorganohydrogensiloxane MHkQ, containing MH units and Q units and containing at least three or more hydrogen atoms bonded to silicon atoms per molecule, which meets applicants’ (b);
(F) platinum-based catalyst, which meets applicants’ (c); and
(C-2) n-decyltriethoxysilane, which meets applicants’ (d) as the monovalent alkyl group has 10 carbon atoms.
Takenaka anticipates instant claims 1-2 and 5-6.
As to claim 7, Takenaka exemplifies the inclusion of about 0.5 phr of n-decyltriethoxysilane based on 100 parts by weight of the composition as a whole.
As to claim 9, Takenaka discloses the composition as having adhesion to an electronic part; therefore, the composition meets the “adhesive” limitation.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2005-008657 in view of Takenaka (US 2020/0140736).
JP ‘657 exemplifies a composition comprising the following:
(A-1) Mv at both ends of a linear polymethylvinylsiloxane, where Mv is a vinyl group and meets applicants’ (a);
(B-1) linear polymethylhydrogensiloxane, which is previously described as having at least 3 hydrogen atoms bonded to silicon atoms involved in the addition reaction, which meets applicants’ (b);
(C-1) platinum complex catalyst, which meets applicants’ (c);
(D) mica, which meets applicants’ inorganic fine particles having a scaly shape in instant claims 3-4, as mica is a silicate material which is inherently scaly; and
(E-1) cyclic siloxane of the following formula:
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JP ‘657 does not teach or suggest the applicants’ (d) a silicon compound having a monovalent alkyl group of 8-30 carbon atoms, as claimed.
Takenaka teaches a composition comprising (A) a filler, (B) a cyclic siloxane which can have a COO(CH2)3Si(OCH3)3 group (p. 3, [0067] to p. 4, [0082]); (C) an alkoxysilane having an alkyl group of 6-18 carbon atoms; (D) a polyorganosiloxane containing two or more aliphatic unsaturated groups, such as vinyl groups; (E) a polyorganohydrogensiloxane having two or more H atoms to serve as a crosslinker for (D) and (B); and (F) a platinum catalyst.
Takenaka teaches that by blending (C) an alkoxysilane having an alkyl group of 6-18 carbon atoms, it can impart thixotropic properties in association with component (B), the cyclic siloxane, to the polysiloxane composition without markedly increasing the viscosity of the composition, as (C) and (D) have poor compatibility (p. 7, [0107]). Takenaka exemplifies the alkoxysilane as n-decyltriethoxysilane.
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to have added an alkoxysilane having a C6-C18 alkyl group to the composition of JP ‘657, as Takenaka teaches that the inclusion of such prevents a slump from occurring, which improves the workability of the composition and allows for excellent application properties.
JP ‘657 in view of Takenaka is prima facie obvious over instant claims 1-2 and 5-7.
As to claims 3-4, JP ‘657 teaches the inclusion of preferably 40-100 phr mica based on component (A) the vinyl group containing polysiloxane. Takenaka exemplifies the inclusion of 11 phr n-decyltriethoxysilane based on 100 parts (A). Adding 11 parts n-decyltriethoxysilane to the composition of JP ‘657 is prima facie obvious and suggests the mica as being present in an amount of 85 phr based on the total amount of applicants’ (a)-(d).
As to claim 8, JP ’657 teaches the inclusion of an adhesion imparting agent ([0042]).
As to claim 9, JP ‘657 teaches that the composition can exhibit adhesiveness ([0041]).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIEANN R JOHNSTON whose telephone number is (571)270-7344. The examiner can normally be reached Monday-Friday, 8:00 AM - 4:00 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached at (571)272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Brieann R Johnston/Primary Examiner, Art Unit 1766